Microsoft Trademark Setback

By EDMUND L. ANDREWS,

Published: February 25, 1993

WASHINGTON, Feb. 24—
In a case that echoes earlier fights over terms like "Light Beer" and "the Pill," the Federal Government has issued a preliminary decision denying the Microsoft Corporation a trademark for the word "Windows" on its hugely successful computer program by that name.

If it is upheld, the decision by the United States Patent and Trademark Office, which Microsoft will appeal, would be a big blow to the software giant. Microsoft dominates the market for programs that provide the basic instructions on I.B.M.-compatible personal computers.

Developed largely so that I.B.M. computers could become as easy to use as Apple Computer's Macintosh line of machines, Windows has become a wildly successful product in its own right.

In the last year, Microsoft has sold more than 12 million copies of Windows, which allows someone to use more than one program, like a word processor and a tax program, at the same time and to move easily between them without having to type arcane commands. Windows displays the individual programs in small rectangular frames on a single screen and has spawned a software industry of companies that tailor programs to run with it. Windows and associated programs are now widely used in offices and homes. The Issue of Imitators

If Microsoft loses the trademark battle, it will have a much more difficult time fending off imitators that promote their products with variations of the same name. Company officials say customers would be in danger of buying inferior products and that rivals would effectively get a free ride at Microsoft's expense.

Microsoft has been trying to require programmers who create software for Windows to obtain licenses that give Microsoft some control over the contents of the programs.

Opponents of the software giant, which is now the target of an antitrust investigation at the Federal Trade Commission, argue that it is trying to carve out exclusive use for a word that is as common in the computer industry as "sudsy ammonia" was in cleaning compounds or "the pill" in contraceptives. Both names were rejected by the Patent Office over the years, as was "Light Beer," which the Miller Brewing Company attempted to register as a trademark.

In a detailed, 31-page letter issued last week, the Patent Office sided strongly with Microsoft's opponents. The letter argued at length that the word "windows" has a generic meaning in the computer industry and was in use long before Microsoft first introduced its product in 1983.

Microsoft officials minimized the importance of the letter, saying that it represented merely one step in a long process. Under the rules, the company has six months to respond and try to persuade the Patent Office to change its mind. If that effort fails, the company may then appeal the ruling to the agency's board of appeals and then take the matter into Federal court. 'There Is No Confusion'

Jonathan Lazarus, vice president for strategic systems at Microsoft, said the company was merely trying to protect its hard-earned name and prevent consumers from being fooled by inferior copycat products.

"There is value in the name Windows," he said today, adding that the word "windows" has acquired a distinctive and inextricable association with his company's product. "There is no confusion among anyone in the personal computer industry that when you say 'windows,' you're referring to Microsoft Windows," he said.

But the Federal agency's letter said that "the evidence clearly demonstrates that the public understands the term 'windows' to mean a genus of goods, namely computer software which utilizes windows on a computer screen." It said that " 'competitors' need to use the term to refer generically to the goods identified thereby outweighs the need of the applicant for exclusive rights to the term."

Huge sums are potentially at stake. The allure of the Windows program is that it frees people from having to type in arcane commands on a keyboard, allowing users instead to respond to easy-to-understand symbols on the screen -- like a waste basket for discarding an unwanted file.

Microsoft allows hundreds of companies to use the Windows name and logo on software products that work with its program and on publications about it. The company does not charge any royalties. But it requires programmers to obtain a license, sets out rules for "proper use" of the logo and requires that every software product bearing the logo be indeed technically compatible with the Windows program.

But officials at Borland International, a big software company in Scotts Valley, Calif., argue that Microsoft is merely using the trademark as a tool to retain control over the software market.

"It's as if General Motors trademarked the word 'sedan,' and nobody else would be able to call products a sedan," said Heidi Sinclair, vice president of corporate strategy at Borland, which has applied for trademarks on the names Borland Windows and Turbo Windows.